ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGO Juris A/S v. john corona Case No. D2022-1349 1. The Parties The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB , Sweden. The Respondent is john corona, United States of America ("United States"). 2. The Domain Names and Registrar The disputed domain names
, , , , , , , , , , , , and are registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2022. On April 14, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 15, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 19, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 21, 2022. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On April 19, 2022, the Respondent sent an email communication to the Complainant and the Center, stating its willingness to sell the disputed domain names. On April 20, 2022, the Complainant replied, stating that it was opening to settling if the Respondent requested it. On April 20, 2022, the Center sent an email communication inviting the Complainant to suspend the proceedings to reach a settlement. The Complainant did not respond. page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2022. The Respondent did not submit any response. Accordingly, the Center commenced the panel appointment process on May 18, 2022. The Center appointed Alistair Payne as the sole panelist in this matter on May 24, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is the Danish owner of the global Lego construction toy business with products sold in more than 130 countries, including the United States. The Complainant owns numerous trade mark registrations for its LEGO word mark, including in particular United States registration 1018875 registered on August 26, 1975. It also owns close to 5,000 domain names containing the LEGO mark and operates an extensive website for its business at . The disputed domain names were all registered on October 21 2021. They each divert to a separate Registrar parking pages that feature sponsored links. 5. Parties' Contentions A. Complainant The Complainant submits that it owns registered trade mark rights for its LEGO mark which it says is one of the best known marks in the world and which has been recognised as such by a number of organisations that review brands and corporate reputation. It notes that each of the disputed domain names incorporate the LEGO mark. It says that this is sufficient to support a finding of confusing similarity for each of the disputed domain names and that the fact that each of the disputed domain names contains various descriptive terms related to cryptocurrencies such as "coinbank", "coinexchange", "coinmining", "cryptocoins", "btc", "tokens" and "ticket" or the prefixes "my" and "twit" does not detract from the overall impression of the mark given by the incorporation of the LEGO mark and does not prevent a finding of confusing similarity. The Complainant submits that it has given no licence or authorisation of any kind to the Respondent to use the LEGO trade mark and that the Respondent is not an authorised dealer of the Complainant's products and has never had a business relationship with the Complainant. It says that the Respondent is not commonly known by any of the disputed domain names and notes that the Whois information identifies the registrant as "John Corona Patriots Act LLC" which has no resemblance to any of the disputed domain names. The Complainant says further that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, but instead has intentionally chosen each of the disputed domain names based on the Complainant's LEGO registered trade mark in order to generate traffic and income through websites that feature sponsored links and are therefore commercial. In terms of registration in bad faith, the Complainant says that the Respondent registered the disputed domain names on October 21, 2021, which is subsequent to the date on which the Complainant registered the trade mark LEGO in the United States (where the Respondent resides) and elsewhere by many years. The Complainant submits that it is obvious that it is the fame of the LEGO trade mark that has motivated the Respondent to register the disputed domain names and that the Respondent cannot claim to have been using the LEGO trade mark, without being aware of the Complainant's rights to it. page 3 The Complainant notes that it first tried to contact the Respondent on December 7, 2021 by sending a cease and desist letter by email requesting a voluntary transfer of the disputed domain names and offering compensation for the Respondent's out of pocket expenses. In spite of the reminders sent, no reply was ever received and, as a consequence, the Complainant says that it filed this Complaint. The Complainant asserts that the Respondent is using the disputed domain names in terms of paragraph 4(b)(iv) of the Policy in an intentional attempt to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites. It submits that the disputed domain names each resolve to a parking page featuring sponsored links and that this amounts to diversion of Internet users by creating a likelihood of confusion with the Complainant's mark and to use for commercial purposes. The Complainant says that the Respondent currently holds registrations for several other domain names that misappropriate the trade marks of well-known brands and businesses with the use of similar terms related to cryptocurrencies. This fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is also evidence of bad faith registration and use of the disputed domain names. The Complainant notes that these domain names include , , , and . According to the Complainant, the Respondent has registered numerous disputed domain names that each infringe upon the Complainant's LEGO trade mark. The number of infringing domain names registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting, which it says is evidence of bad faith registration and use. B. Respondent The Respondent sent an email communication described in the procedural history stating its willingness "to sell these domains for a good faith and honorable price", but the Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns registered trade mark rights in various countries for its LEGO word mark including in particular United States registration 1018875 for LEGO registered on August 26 1975. Each of the disputed domain names wholly incorporate the LEGO word mark and the Panel therefore finds that each of them is confusingly similar to the Complainant's registered trade mark rights for LEGO. The addition of "coinbank", "coinexchange", "coinmining", "cryptocoins", "btc", "tokens" and "ticket", or either of the prefixes "my" or "twit" does not prevent a finding of confusing similarity. As a result, the Panel finds that each of the disputed domain names is confusingly similar to the Complainant's registered LEGO mark and that the Complaint therefore succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that it has given no licence or authorisation of any kind to the Complainant to use the LEGO trade mark and that the Respondent is not an authorised dealer of the Complainant's products and has never had a business relationship with the Complainant. It has asserted that the Respondent is not commonly known by any of the disputed domain names and has noted that the Whois information identifies the registrant as "John Corona Patriots Act LLC" which has no resemblance to any of the disputed domain names. The Complainant has submitted further that the Respondent is not using any of the disputed domain names in connection with a bona fide offering of goods or services, but instead has intentionally chosen each of the disputed domain names based on the LEGO registered trade mark in order to generate traffic and income through websites that feature sponsored links and are therefore commercial. page 4 The Complainant's LEGO mark is highly distinctive and a household name on a global basis and has enjoyed a very significant reputation for many years prior to the registration of any of the disputed domain names. There is no evidence that the Respondent is using any of the disputed domain names for noncommercial or legitimate purposes or has any other bona fide interest in using the LEGO mark. Each of the disputed domain names is in fact being used to resolve to a third party parking page featuring sponsored links. In these circumstances, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in any of the disputed domain names. The Respondent has failed to respond to or to rebut the Complainant's case and for these reasons and for the reasons set out under Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The Respondent registered each of the disputed domain names on October 21, 2021, which is subsequent to the date on which the Complainant registered the trade mark LEGO in the United States (where the Respondent resides) by many years. The LEGO mark is highly distinctive and extremely well reputed globally and it is not plausible that the United States-based Respondent could not have been aware of the Complainant's very well-known mark and business when it registered each of the disputed domain names. The Complainant has provided evidence that the Respondent not only owns the 14 disputed domain names containing the LEGO mark but has also registered several other domain names that misappropriate the trade marks of well-known brands and businesses, including , , , and . It therefore appears that the Respondent has sought to prevent a number of owners of very well reputed trade marks from reflecting their mark in a corresponding domain name and has engaged in a pattern of such conduct. This amounts to evidence of registration and of use of each of the disputed domain names under paragraph 4(b)(ii) of the Policy. Under paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the website. The Panel finds that the requirements of paragraph 4(b)(iv) of the Policy are satisfied in this case. As noted above the Respondent has used each of the disputed domain names containing the LEGO mark to attract and confuse Internet users into thinking that they might arrive at a website owned by or affiliated with the Complainant's LEGO brand when that is not the case. Each of the disputed domain names is in fact being used to resolve to a third party parking page featuring sponsored links which amounts to use for commercial purposes in terms of the Policy as found by previous panels in similar circumstances, including in Inter Ikea Systems B.V. v Daniel Woodson, WIPO Case No. D2011-1933. The Panel notes that the Complainant first tried to contact the Respondent on December 7, 2021 by sending a cease and desist letter by email requesting a voluntary transfer of the disputed domain names and offering compensation for the Respondent's out of pocket expenses. The Respondent failed to respond to this letter in spite of the Complainant's reminders. The Panel's view of the Respondent's bad faith is only reinforced by its failure to respond to this letter. Accordingly, the Panel finds that the Respondent has both registered and used each of the disputed domain names in bad faith and the Complaint also succeeds under this element of the Policy. page 5 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , , , , , , , , , and be transferred to the Complainant. /Alistair Payne/ Alistair Payne Sole Panelist Date: June 7, 2022
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